Adidas and the dog-eat-dog world of trade marks
Earlier this month, the trade mark office in Japan decided in favour of Adidas and refused to register “adidog” as a trade mark on the ground that the mark was confusingly similar to the Adidas trade mark.
The “adidog” trade mark application was filed by an individual covering clothing for pets and Adidas opposed the application arguing that the use and registration of the “adidog” mark would confuse consumers.
The trade mark office in Japan agreed with Adidas and found that Adidas (a word derived from the name of the company’s founder ‘Adi Dassler’) was an invented word with no dictionary or other known meaning, and found that the name “Adidas” had acquired a remarkable degree of reputation well before the filing date of the “adidog” application as a result of continuous use on sportswear and marketing activities in Japan since 1971.
In the final analysis, the office found that the relevant marks were clearly similar (visually and phonetically) and that the relevant goods (sports clothing and clothing for pets) were also similar and therefore consumer confusion was likely.
A few take-away points:
Trade marks are valuable assets: As this case illustrates, a registered trade mark grants the owner significant monopoly power to prevent a third party from providing identical or similar goods/services to consumers under an identical or similar mark. Businesses wishing to protect the significant goodwill and reputation that they have built up in their brands should ensure that they seek registered trade mark protection for all relevant brand identifiers (e.g. including words, logos and taglines) and all relevant goods and services in all key market territories.
Be on the look-out, even for those who are not direct competitors: This case also demonstrates how important it is to keeping abreast of what is happening in the market with other brands. Businesses wishing to protect their brands should also carry out regular searches on search engines, on social media and on trade mark registers to ensure that other entities are not using brand identifiers which are likely to cause consumer confusion (even where, as in this case, the competing brand may not necessarily be a direct competitor i.e. sports clothing vs. clothing for pets).
Carry out searches and take advice before you invest in brand protection: Before investing in a new brand, it is strongly advisable to carry out clearance searches with a view to ascertaining whether there are any prior rights out there (e.g. prior registered or unregistered trade mark rights) which would obviously block a trade mark application. In this case, had the applicant for the “adidog” trade mark carried our clearance searches and taken professional advice in advance, they would/should have been advised that the likelihood of a successful opposition based on the prior Adidas marks was relatively high.
Imitation may be the greatest form of flattery, but it may turn out to be an expensive lesson too: It may be tempting to seek to ‘ride on the coat-tails’ of an existing well-known brand and to seek to emulate or satirise it. However, where this course of action is pursued, there is a very real risk that the owner of the existing well-known brand will object and argue that unauthorised use is being made of their goodwill, that unfair advantage is being taken of the reputation of their brand and/or that detriment is being caused to the reputation of their brand (e.g. by blurring, diluting or tarnishing the brand). In the end, it could be an expensive lesson in trade mark law and passing off law, with the party who originally sought to ‘ride on the coat-tails’ being forced to change their brand.
Briffa are experts in all aspects of intellectual property law and practice. If you are considering protecting your brand and would like to discuss how best to go about it, whilst avoiding the obvious pitfalls, please feel free to get in touch with us on 020 7288 6003 or [email protected] to arrange a free call or meeting with one of our lawyers.
Written by Éamon Chawke, Solicitor